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Marcasur 25 Aniversario

Patentes

Landmark decision within the patent system

Scavia & Scavia patent team has obtained a very important decision regarding the filing of divisional applications in Peru.

By Scavia & Scavia

This case relates to a patent application filed on behalf of one of our clients, who is a leading company in the pharmaceutical industry.

The summary of the facts and considerations of the case are as follows:

On September 25, 2021, the Peruvian Patent Office (PPO) denied the registration of a patent on the grounds that the claims of the invention were not sufficiently clear to describe the subject matter susceptible of patent protection.

As a result of the denial, our firm filed a divisional application derived from the prior parent application.

On November 4, 2021, the PPO issued a resolution rejecting the divisional application. The refusal was based on procedural grounds since —according to the PPO— at the time the divisional application was filed, the original or parent application was no longer alive.

The reasoning from the PPO for rejecting the divisional application was that this kind of applications may only be accepted, provided they are filed prior to the issuance of the resolution from the PPO that dismisses the patent applied for registration in the parent application.

On appeal, the IP Tribunal sustaining our defense allegations issued the following ruling:

If the patent registration of the original or parent application is denied, the corresponding divisional application may be filed and must be accepted by the patent authority, until the term for appealing against the denial decision is still legally valid.

Based on the above considerations, the IP Tribunal reversed the decision from the PPO and ordered this first instance authority to accept the filing of the divisional patent application from our client.

This is a landmark decision within the patent system in Peru and has ruled about the legal term during which divisional applications may be legally filed, when the patent applied for registration in the parent application has been denied. The decision is mandatory and shall be followed by the Peruvian Patent Office for the admission of divisional applications in the future.

Marcasur Magazine
Marcasur Magazine - Edición Nº 87